Expert: George H. Morgan, P.E., Patent Agent - 12/30/2010

Question
QUESTION: Hello! I have made an invention and had a search performed. There is one other patent out there that resembles mine, but thiers is made to fit on a completely different part of the body than mine in a different manner. They were very specific on the location thiers could be used and there was no mention in their that it could be used where mine is intended for.

Can I file my own application for a provisional? I already have diagrams of my invention and a description. Another question I have is that once I file for the provisional, what happens after 8 months? Does it just expire leaving all those that I introduced this invention to then have an opportunity to take it? When would I find out from the Patent Office if there really is no other invention out there like mine and that I could own it? Thank you!

ANSWER: Yes.

When the USPTO receives a provisional, they stick it in a file & forget about it. In 20 years, unless you file an application and make a specific reference to it, they throw it out. It stays confidential.

If you file a formal within the 12 months, you can refer to the provisional, and claim it as a priority document. If you file after 12 months, you can't get the original filing date, but you can refer to it in your formal, and it strengthens your claim as to when the invention occurred.

You would find out what is considered prior art by the USPTO when you receive the first office action on your formal filing. You know it is an invention when the USPTO allows your claims. That happens after they reviewed you application, and any office action responses that occurred in response to any of their objections are accepted, and you pay the allowance fee.

If you are quoting eight months from any of my postings, that is the point when it is time to start serious work on the formal filing. i.e. don't wait for the lasts minute of the twelve months period.

I hope that helps. I trust  you did not rely  on any invention promotion company for your search, as they usually never find any prior art that would discourage you from using their services.

I hope this helps. Best wishes on your projects.

George H. Morgan
http://www.evansville.net/biz/patagent

---------- FOLLOW-UP ----------

QUESTION: thank you!! i did just file online and uploaded an abstract description pdf and a non black & white drawing diagram pdf. it asked for $220.00 in fees. i skipped the payment and hit submit. i received a confirmation of my provisional application. am i protected in any way now? how long do i have to pay the $220.00 fees?

do i have to file a formal application to find out if it has already been invented? how long does that take and what is the average cost of an application? thank you so much. not many people understand this sunject.

Answer
You should be getting two notices of missing parts, each asking for a $110 fee plus a missing fees charge of $65. The time to pay will be spelled out, either 30 days, or 90 days.

If you get two notices, & two late fees tacked on, I would consider forgetting about the two, and filing a third, with your credit card payment for $110 at the time of filing.

The first two will be abandoned, and the third will be your filed provisional. The only disadvantage is your priority date is that of the third filing, which is probably only a few days.

If you have everything done by a registered practitioner, i.e Agent or Attorney, you are looking at a total cost, covering the practioner's fees, government fees, office action responses, postage, etc of anywhere from $10,000 to $30,000.

If you are up to doing it yourself, "Patent It Yourself" by David Pressman, and published by Nolo Press in Berkeley, California is the recognized "how to" text.

My web site has a book review page listing it, & other helpful texts for inventors, creative people, and parents afflicted with creative children. It also has an inventors resouces page with a link to the R. J. Riley caution web site with more information about the more notorious invention scamming operations. There are a lot of predators preying on first time inventors.

Your search is your first clue as to what is out there, assuming it was properly done, by someone other than an invention promotion company. However, only an issued patent is the best way to know if you have an invention or not.

Best wishes on your project.